Sensa Products, LLC v. omar sharif
Claim Number: FA1112001418955
Complainant is Sensa Products, LLC (“Complainant”), represented by Howard Neu of Law Office of Howard Neu, P.A., Florida, USA. Respondent is omar sharif (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sensaweightlossreviewss.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 7, 2011; the National Arbitration Forum received payment on December 7, 2011.
On December 8, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <sensaweightlossreviewss.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sensaweightlossreviewss.com. Also on December 13, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
[a.] The Infringing Domain Name is confusingly similar to Sensa’s SENSA mark. UDRP Rule 3(b)(ix)(1): UDRP ¶4(a)(1).
Dr. Alan Hirsch, creator of the SENSA® Weight-Loss System, has appeared on Dateline NBC, The Oprah Winfrey Show, CNN, The CBS Early Show, Good Morning America and Extra TV. Since its launch, the SENSA® Weight-Loss System has been reviewed in hundreds of local, national and international media sources. As a result of Sensa’s use and registration of the SENSA marks in 2009, and as a result of the substantial publicity generated by Sensa’s unique product, Sensa enjoys strong rights in its mark for dietary weight control.
Sensa has spent in excess of Thirty-four Million dollars ($34,000,000.00) on advertising, including radio at $7,349,979, print ads at $2,479,729, Shop NBC, Home Shopping Network and affiliate marketing.
Complainant SENSA owns two U.S. Trademarks and foreign marks as well. These registrations are incontestable under U.S. Trademark law and are conclusive evidence of: (1) the validity of the SENSA mark as a service mark; (2) the validity of the mark registration; (3) Sensa’s ownership of the SENSA mark; and (4) Sensa’s exclusive right to use the SENSA mark in commerce. 15 U.S.C. § 1115(b); see also Reed Elsevier, Inc. v. Domain Deluxe, FA 234414 (Nat. Arb. Forum, Mar. 18, 2004). Therefore, this Panel will not need to analyze the validity of the SENSA mark or perform any analysis of trademark law. Rather, the Panel need only apply the Policy to Sensa’s incontestable trademark rights.
Sensa’s ownership of its Federal Trademark Registrations for SENSA is sufficient, under the UDRP, to establish rights in the SENSA mark. See Miller Brewing Co. v. Miller Family, FA104177 (Nat. Arb. Forum, Apr. 15, 2002) (finding that complainant had established rights to the MILLER TIME mark through its Federal Trademark Registrations). Therefore, Sensa has rights in its SENSA mark under UDRP ¶4(a)(1) based on its registrations of the mark with the United States Patent and Trademark Office and non-U.S. agencies.
Respondents’ infringing Domain Name is confusingly similar to Complainant’s SENSA mark because <SensaweightlossReviewss.com> is virtually identical to the SENSA mark. Under the UDRP, the slight difference between the SENSA mark and <SensaweightlossReviewss.com> does not offset the overwhelming similarity between the infringing Domain Name and Sensa’s well-established mark.
Not only does Respondent use Complainant’s SENSA trademark in its Domain Name, but its web site virtually copies Complainant’s web site complete with the SENSA mark. Further, the page is replete with ads for products that compete with Complainant’s products. The Respondent merely adds the words “weight loss reviews” to the Complainant’s mark. As a result, Respondent’s use of SENSA within its Domain Name is likely to cause confusion with the Complainant’s mark.
[b.] Respondent does not possess any legitimate rights or interest in the Infringing Domain Name. UDRP Rule 3(b)(ix)(2); UDRP ¶4(a)(ii).
Respondent cannot establish legitimate rights or interests in the infringing Domain Name because Sensa already owns the SENSA mark. Under UDRP ¶4(c.), Respondent can only establish legitimate rights or interests in the infringing Domain Name if: (1) before notice of the dispute, it was using the Domain Name in connection with a bona fide offering of goods or services; (2) it is commonly known by the Domain Name; or (3) it is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain. See UDRP ¶4(A)(II); 4(c). Respondent cannot demonstrate any of these three requirements.
Respondent is using the infringing Domain Name for commercial gain by using hyperlinks to competing products of the Complainant, which hyperlinks are featured prominently on its web site. Respondent is not connected to Sensa. So Respondent’s use of the infringing Domain Name to unfairly compete with Sensa is not a bona fide offering of goods or services pursuant to UDRP ¶4(c)(1).
The WHOIS information lists the registrant of the disputed domain name as “DOMAINS BY PROXY, INC.” Using the WHOIS information, it appears that the Respondent here is not nominally similar to Complainant’s mark and thus may not say that it is commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006).
A respondent does not make a Policy ¶4(c)(i) bona fide offering of goods or services nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use of a disputed domain name when the domain name resolves to a website that contains competing hyperlinks. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), and Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007).
Based upon Sensa’s wide-spread use of the well-known SENSA mark in the dietary supplement industry, Respondent’s registration of the infringing Domain Name, to offer directly-competitive products through hyperlinks to competitors, was clearly intended to trade off of consumer recognition of the SENSA mark.
[c.] Respondent registered and is using the infringing Domain Name in Bad Faith. UDRP Rule 3(b)(ix)(3); UDRP ¶4(A)(III).
Respondent registered and uses the <SensaweightlossReviewss.com> domain name in bad faith under a Policy ¶4(b)(ii) evaluation. A respondent’s registration and use of a disputed domain name to provide competing hyperlinks disrupts a complainant’s business, constituting evidence supporting findings of bad faith registration and use. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), and David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007).
The Respondent registered <SensaWeightLossReviewss.com> on May 8, 2011, in Bad Faith and has used it continuously in Bad Faith ever since then.
B. Respondent failed to submit a Response in this proceeding.
Complainant Sensa Products, LLC is the owner of the SENSA mark. The mark is used in connection with a weight loss dietary supplement. Complainant has registered the SENSA mark (e.g., Reg. No. 3,593,092 registered March 3, 2009) with the United States Patent and Trademark Office (“USPTO”). Complainant has also registered the SENSA mark (Reg. No. 7,066,871 registered April 24, 2009) through the Office of Harmonization for the Internal Market (“OHIM”).
Respondent omar sharif registered the disputed domain name on May 8, 2011. The <sensaweightlossreviewss.com> domain name resolves to a website which provides a review of Complainant’s product and links to competing products.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant argues it has rights in the SENSA mark which it uses in connection with a weight loss dietary supplement. Panels have found registration of a mark with a trademark authority sufficiently establishes rights in the mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of Policy ¶4(a)(i).”). Complainant has provided the Panel with evidence of its registration of the SENSA mark through USPTO (e.g., Reg. No. 3,593,092 registered March 3, 2009). Complainant has also provided the Panel with evidence of the SENSA mark’s registration with the OHIM (Reg. No. 7,066,871 registered April 24, 2009). In Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007), and Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), the panels held rights acquired by trademark registration are established for the purposes of a Policy ¶4(a)(i) analysis regardless of whether the mark is registered in the country in which the parties reside. Therefore, the Panel finds Complainant has rights in the SENSA mark pursuant to Policy ¶4(a)(i).
Complainant contends the <sensaweightlossreviewss.com> domain name is confusingly similar to the SENSA mark. Respondent adds the following additional generic and descriptive terms to the SENSA mark: “weight,” “loss,” and “reviewss.” In light of (i) the use of the web site (it purports to be a review site), (ii) links which one would expect to go to Complainant’s products go to a competitor’s products and (iii) the domain name is registered in the name of a nominee, the Panel finds the addition of these generic and descriptive terms fail to make the <sensaweightlossreviewss.com> domain name so distinct as to negate a finding of confusingly similarity. See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶4(a)(i)). Additionally, Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name. The Panel finds this change makes no difference to a Policy ¶4(a)(i) analysis because a top-level domain is a required element of domain names. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds Respondent’s <sensaweightlossreviewss.com> domain name is confusingly similar to the SENSA mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant claims Respondent has no rights nor legitimate interests in the disputed domain name. The Panel finds Complainant has made a prima facie case in support of this finding and the burden shifts to Respondent to dispute these claims. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(c)). The Respondent has failed to provide any type of a response. Therefore, Panel will accept Complainant’s assertions as true to the extent the documentary evidence does not contradict them. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel will review the record for information suggesting Respondent has rights or legitimate interests in the disputed domain name under Policy ¶4(c).
Complainant claims Respondent is not commonly known by the SENSA mark or the <sensaweightlossreviewss.com> domain name. The present WHOIS record for the disputed domain name lists “omar sharif” as the domain name registrant (and used to list the name of a nominee). The panels in Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003), held that the WHOIS record is often determinative of whether a respondent is commonly known by a disputed domain name. The Panel has reviewed the WHOIS record and finds the disclosed registrant’s name (either previously in the nominee’s name or the current “omar sharif” name) does not suggest the owner is commonly known as <sensaweightlossreviewss.com>. The Panel concludes Respondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii).
Complainant claims Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <sensaweightlossreviewss.com> domain name resolves to a website which displays numerous links to products which compete with Complainant’s product in the weight loss supplement industry, as well as a review of Complainant’s product. Panels have previously held the use of a disputed domain name to display links to Complainant’s competitors does not provide the respondent with rights or legitimate interests in the disputed domain name, especially where the content of the web site would suggest those links would normally be expected to go to Complainant’s products. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)). This seems to be a classical “bait and switch” situation. Complainant’s product is ostensibly reviewed, but the links go to competing products. Therefore, the Panel finds Respondent’s use of the <sensaweightlossreviewss.com> domain name to display a review of Complainant’s product and links to Complainant’s competitors is neither a Policy ¶4(c)(i) bona fide offering of goods or services nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant contends the <sensaweightlossreviewss.com> domain name is disruptive. The disputed domain name resolves to a website which provides information about Complainant’s product as well as providing a multitude of links to competing products in the weight loss industry. Panels have found in the past the registration and use of a disputed domain name was done in bad faith where the disputed domain name was used to display links of products which competed with the complainant…especially where this was not made clear. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶4(b)(iii).”). The Panel finds Respondent’s registration and use of the <sensaweightlossreviewss.com> domain name to provide visiting Internet users with links which surreptitiously connect to competing weight loss products and services is disruptive under Policy ¶4(b)(iii), constituting bad faith registration and use.
Finally, Complainant claims Respondent registered and is using the disputed domain name to take commercial advantage of Internet users’ mistakes regarding the source, sponsorship, or affiliation of the disputed domain name. The <sensaweightlossreviewss.com> domain name is confusingly similar to Complainant’s SENSA mark. The resolving website’s content includes a review of Complainant’s products as well as links to competing products (although the fact these are competing products is not highlighted). Given these apparent ties to Complainant, many Internet users are likely to believe the disputed domain name is owned or operated by Complainant and, working off of the goodwill established in Complainant’s mark, will click through the links on the website. Respondent held title to the domain name in a nominee, which is unusual in the commercial context.
The Panel infers Respondent receives compensation for the Internet traffic it redirects through these links and the confusion as to the source, sponsorship, or affiliation of the disputed domain name was intentionally created by Respondent to make a profit. Therefore, the Panel finds Respondent registered and is using the <sensaweightlossreviewss.com> domain name to take commercial advantage of Internet users’ confusion pursuant to Policy ¶4(b)(iv), constituting bad faith registration and use. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <sensaweightlossreviewss.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: January 12, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page